Academic journal article Southern Law Journal

Intellectual Property Issues Arising from Business Ideas Generated by Undergraduate Students

Academic journal article Southern Law Journal

Intellectual Property Issues Arising from Business Ideas Generated by Undergraduate Students

Article excerpt

A decision from the United States Supreme Court in the summer of 2011 and the passage of the America Invents Act late the same year demonstrate the continued interest of courts and lawmakers in determining the contours of intellectual property protections. One area of interest relates to intellectual property protection attaching to student-created work at universities. Most of the cases and literature discussing this issue analyze the work of graduate students at research institutions. These universities typically have comprehensive technology transfer departments and intellectual property policies and agreements. Less attention is given to undergraduate work. Of particular interest in the present paper, is the extent to which the law and university policies determine the ownership and rights of stakeholders in undergraduate research. Narrowing the issue even further, the question is raised as to the ownership of ideas generated by undergraduate students in the context of entrepreneurship competitions in business schools. Thus, if a student proposes a business model or idea in a competition that eventually becomes the next great social networking platform, what rights, if any, do the student and university have in the creation? In offering provisional answers to this and similar questions, we analyze the limited law available, the literature related to intellectual property issues raised by student-created work, and a convenience sampling of university business plan competition guidelines from different types of institutions. We conclude that traditional legal doctrines have problematic applicability to the scenarios discussed and that universities should adopt ethical and responsible policies that govern undergraduate-generated ideas and creations.

I. Introduction

This article analyzes the intellectual property issues raised by undergraduate research and student-created ideas. Even though universities are often sophisticated actors in the intellectual property world, many may be unaware of the legal tensions that arise when undergraduate students do research or generate business ideas for a class or an entrepreneurship competition. More than this, this article suggests that existing legal doctrines are not directly applicable to these situations. The broad contours of the legal relationship between undergraduates and universities continue to change, and this change creates uncertainty. Thus, universities must proceed carefully and responsibly in creating policies related to undergraduate research and development.

A. The American Invents Act and Recent Legislative Intellectual Property Changes

Intellectual property law remains a very active field for both the practicing lawyer and the legal scholar. In recent years Congress fundamentally altered American patent law by adopting a "first-to-file" regime. On September 16, 2011, the President signed the Leahy-Smith America Invents Act. This legislation replaces the "first-to-invent" patent system with a "first-to-file" regime that is more consistent with international rules. Congress amended title 35 U.S.C. § 102 regarding novelty and prior art to prevent the grant of a patent if "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. . . Furthermore, the new legislation provides that "[a]ny strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from prior art."2 Along with these amendments there is an additional provision directing the U.S. Patent and Trademark Office to establish an eight-year transitional program to re-examine certain business method patents.3 This newly created "first-to-file" rule becomes effective on March 16, 2013.4

While the legislation contains other provisions beyond the score of this paper, the highlighted items reflect significant changes and the overall importance of intellectual property in the nation's current economic and political environment. …

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